Ex Parte Degner et al

Board of Patent Appeals and Interferences

Jul 31, 2009

10734073 (B.P.A.I. Jul. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAYMOND L. DEGNER, ERIC H. LENZ, and
LAM RESEARCH CORPORATION,
Appellants
____________

Appeal 2008-003131
Reissue Application 10/734,073
Reexamination Control nos. 90/007,027 and 90/007,114
Patent 5,074,456
Technology Center 1700
____________

Decided:1 July 31, 2009
____________

Before TERRY J. OWENS, CAROL A. SPIEGEL, and ROMULO H.
DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

1 The time period for seeking judicial review begins to run from the decided
date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or Notification Date (electronic delivery).
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Appellants appeal under 35 U.S.C. §§ 134 and 306 from a final
rejection of claims 1-36 (Appeal Brief filed on August 30, 2007, hereinafter
“App. Br.”; Final Office Action mailed September 27, 2006). We have
jurisdiction under 35 U.S.C. §§ 6(b), 134, and 306.
We REVERSE.

STATEMENT OF THE CASE
The subject patent for reissue and under reexamination (hereinafter
the “‘456 Patent”) issued to Raymond L. Degner and Eric H. Lenz on
December 24, 1991 from Application 07/584,324 filed on September 18,
1990. According to a Title Report entered July 19, 2004, Lam Research
Corporation is the owner of the ‘456 Patent as recorded at Reel 005455,
Frame 0064 and is therefore Appellant in the reexamination proceedings
(App. Br. 2).
On April 7, 2005, the Office of Patent Legal Administration merged
the subject reissue application and the subject reexamination proceedings
pursuant to 37 C.F.R. § 1.565 (Decision Merging Reexamination and
Reissue Proceeding mailed on April 7, 2005). The first reexamination
proceeding, Control 90/007,027, arose from a request for ex parte
reexamination filed by a third party, Westerman, Hattori, Daniels & Adrian,
LLP of Washington, DC. The second reexamination proceeding, Control
90/007,114, was based on a request filed by a different third party, Xycarb
Ceramics, Inc. of Georgetown, TX. While Appellants state that they do “not
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know of any other appeal or interferences which will affect or be directly
affected by or have a bearing” (App. Br. 2) on our decision, it appears that
the ‘456 Patent is, or has been, the subject of a stayed patent infringement
action captioned Lam Research Corp. v. Schunk Semiconductor, Civil
Action 3:03cv1335 (N.D. Cal.) (Reexamination Litigation Search Conducted
filed April 4, 2006). See 37 C.F.R. § 41.37(c)(1)(ii) (appeal brief must
identify “all other prior and pending appeals, interferences or judicial
proceedings known to appellant”) (emphasis added).
The ‘456 Patent states that the invention relates to “a composite
electrode useful in plasma reactors, such as plasma-etch and plasma-
enhanced chemical vapor deposition reactors” (col. 1, ll. 8-11).
Claims 1, 3, 7, 10, 18, and 33 on appeal reads as follows:
1. An improved reactor of the type having a first
electrode for supporting a substrate, an opposed electrode, and
means for producing plasma therebetween, wherein the opposed
electrode has one face exposed to the first electrode and an
opposite face connected to an electrical source and a thermal
sink, the improvement comprising an opposed electrode
including (a) an electrode plate composed of a substantially
pure material and having a substantially uniform thickness and
(b) a support frame composed of an electrically and thermally
conductive material bonded to a back face of the plate, whereby
the support frame is connected to the electrical source and
thermal sink and a front face of the plate which is exposed to
the first electrode is substantially free from protuberances.
3. An improved reactor as in claim 1, wherein the
electrode plate comprises a disk.
7. An improved reactor as in claim 3, wherein the
support frame comprises a flat plate which is secured to and
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covers substantially the entire opposite surface of the electrode
disk.
10. An improved reactor as in claim 1, wherein the plate
is bonded to the support frame by means of a bonding layer.
18. An electrode assembly comprising:
an electrode disk composed of a substantially pure
material and having a substantially uniform thickness; and
a support ring bonded about the periphery of one face of
the disk, leaving the other face substantially flat and free from
protuberances, wherein the support ring is composed of an
electrically and thermally conductive material.
33. A method for forming an electrode assembly
including a support ring and an electrode plate, said method
comprising:
bonding the support ring about the periphery of the
electrode plate at elevated temperature, wherein the material of
the support ring has a higher coefficient of thermal expansion
that that of the electrode plate; and
allowing the bonded assembly to return to room
temperature, whereby the differential contraction imparts the
desired stress.
(Claims App’x 1, 2, 4, and 6.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed September 19, 2007, hereinafter
“Ans.,” 3-12):
Koch 4,340,462 Jul. 20, 1982

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Inaba (“Shigeru”)2 JP 61-243170 Oct. 29, 1986
Yamada3 JP 61-279672 Dec. 10, 1986
Horiuchi (“Takao”)4 JP 01-204424 Aug. 17, 1989
Okazaki EP 0 346 055 A2 Dec. 13, 1989

The Examiner rejected the claims as follows:
I. Claims 1, 3-5, 16-19, 30, and 31 under 35 U.S.C. § 102(b) as
anticipated by Takao (Ans. 3-5);
II. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Takao and Koch (id. at 5-6);
III. Claims 6 and 20 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Takao and Okazaki (id. at 6 and 9);
IV. Claim 7, 21, and 32 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Takao and Shigeru (id. at 6-7,
9, and 11-12);
V. Claims 8, 9, 22, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Takao (id. at 7 and 9-10);
VI. Claims 10-13 and 24-27 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Takao and
Yamada (id. at 7-8 and 10);

2 Appellants and the Examiner both refer to this document as “Shigeru.” To
avoid confusion, we also refer to it as “Shigeru.” We rely on and cite to the
English translation of Shigeru of record.
3 We rely on and cite to the English translation of Yamada of record.
4 Appellants and the Examiner both refer to this document as “Takao.” To
avoid confusion, we also refer to it as “Takao.” We rely on and cite to the
English translation of Takao of record.

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VII. Claims 14, 15, 28, and 29 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Takao, Yamada,
and Shigeru (id. at 8 and 10-11); and
VIII. Claims 33-36 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Shigeru and Yamada (id. at 12).

ISSUES
Rejections I-III & V
The Examiner asserts that Takao describes every limitation of
independent claims 1 and 18 (Ans. 3-5). With respect to the recitations “a
support frame . . . bonded to a back face of the [electrode] plate” (claim 1)
and “a support ring bonded about the periphery of one face of the [electrode]
disk” (claim 18), the Examiner contends that “the broadest reasonable
interpretation of the term ‘bonded’ would mean ‘something that fastens
things together’” and “that the insulating ring coupled with the sealed ring
bonds or fastens the electrode (7) to the frame (4)” (Ans. 16). See also
Answer at 18. Rejections II, III and V are also premised on this claim
construction (id. at 5-7, 9-10).
Appellants, on the other hand, urge that the Examiner’s claim
interpretation is erroneous because “the term ‘bonded’ is used in the
conventional sense to describe a joint between two surfaces and thus
excludes unbonded surfaces clamped together with a mechanical structure
[as described in Takao]” (App. Br. 22). According to Appellants, “the
Examiner’s interpretation of ‘bonded’ is inconsistent with the usage of that
term in the ‘456 patent” (id.).
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Thus, a dispositive issue for Rejections I-III and V is:
Have Appellants shown reversible error in the Examiner’s conclusion
that the term “bonded” as recited in claims 1 and 18 reads on mechanical
clamping or fastening?

Rejection IV
In rejecting claim 7, the Examiner asserts that “[t]he flat plate
disclosed by Shigeru is a heat radiating backing plate (3) with gold plating,
and is properly combined with Takao, as it would have been obvious to one
of ordinary skill in the art . . . to modify the apparatus of Takao to utilize the
flat plate covering the electrode disk in order to reduce the temperature
elevation of the plate when bonded to the backing plate . . . .” (Ans. 24).
Appellants, on the other hand, contend that the combination of
references does not result in an apparatus including, inter alia, an electrode
bonded to a support frame and that “absent impermissible hindsight, there is
no motivation [or reason] to combine the sputtering target of Shigeru with
the etching apparatus of Takao” (App. Br. 38, 40). Specifically, Appellants
urge that, given the differences between Takao and Shigeru, the proposed
modification renders Takao inoperable and, therefore, “there is no
suggestion or motivation to make the proposed modification” (App. Br. 40-
44).
Thus, the issue arising from the contentions of the Examiner and
Appellants is:
Have Appellants shown reversible error in the Examiner’s
obviousness conclusion as to claim 7 because the Examiner did not
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sufficiently establish that a person having ordinary skill in the art would
have reasonably expected the proposed modification of Takao in view of
Shigeru to result in an operable device?

Rejections VI & VII
For Rejections VI and VII (e.g., claim 10), the Examiner asserts that
“Yamada teaches the plate is bonded to the support frame by means of a
bonding layer . . . formed by soldering” and that “[i]t would have been
obvious to one of ordinary skill in the art . . . to modify the process of Takao
to utilize the support frame using indium in order to affix the target to the
base” as taught by Yamada (citation omitted) (Ans. 7-8).
Appellants counter that the Examiner “fails to provide any showing
that amorphous carbon had been used as a sputtering material or that
amorphous carbon is capable of being soldered to aluminum” and that,
therefore, the Examiner failed “to establish the required reasonable
expectation of success” (App. Br. 48-49). Additionally, Appellants urge that
“[g]iven the different uses and constructions of the Takao showerhead
electrode and the Yamada sputtering target, the Examiner has not provided a
proper legal basis for the obviousness rejection,” i.e., “why a person of
ordinary skill in the art would have selected the isolated teachings of a
soldered arrangement of Yamada and substituted it for the clamped
arrangement of Takao” (App. Br. 52).
Thus, a dispositive issue is:
Have Appellants shown reversible error in the Examiner’s
obviousness conclusion as to claim 10 because the Examiner failed to
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sufficiently establish that a person having ordinary skill in the art would
have had a reasonable expectation of success in modifying Takao by using
Yamada’s bonding layer to affix Takao’s electrode (7) to body or frame (4)?

Rejection VIII
In Rejection VIII (e.g., independent claim 33), the Examiner states
that “Shigeru teaches bonding the backing plate to an electrode plate (silicon
dioxide) at elevated temperature (170 C), wherein the material of the
electrode plate (Cu) has a higher coefficient of thermal expansion that that of
the electrode plate (silicon dioxide),” thus “allowing the bonded assembly to
return to room temperature, whereby the differential contraction imparts the
desired stress” (Ans. 49).
Appellants, on the other hand, contend that “Shigeru fails to disclose
bonding an electrode to a plate to achieve a desired stress due to differential
contraction and only speculation would provide the basis for the Examiner’s
allegation that such pre-stress would be inherent in bonding an electrode
plate to a support ring” (App. Br. 104). Appellants further argue that
Yamada does not cure the deficiency in the Examiner’s speculative
reasoning (id.).
Thus, the dispositive issue is:
Have Appellants shown reversible error in the Examiner’s
obviousness conclusion as to claim 33 because the Examiner’s reasoning is
based on speculation, not facts?

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FINDINGS OF FACT (“FF”)
1. The ‘456 Patent describes the claimed invention as follows (col.
2, ll. 29-47; emphasis added):
According to the present invention, an electrode
assembly suitable for use in a parallel plate plasma
reactor comprises a plate, usually in the form of a disk,
composed of a “semiconductor purity” material having a
substantially uniform thickness. One face of the plate is
bonded to a support frame composed of an electrically
and thermally conductive material, leaving the other face
substantially flat and free from protuberances. Usually,
the support frame will be in the form of a ring which is
bonded about the periphery of a plate in the form of a
disk. Preferably, a plate and support frame are bonded
together with a relatively ductile bonding layer formed
by brazing, soldering, or the like. The bonding material
should be composed of a thermally and electrically
conductive material, such as metals, conductive epoxies,
or the like preferably being formed from low vapor
pressure materials which will have less tendency to
contaminate low pressure reactor environments.
2. The ‘456 Patent further states (col. 5, l. 64 to col. 6, l. 5;
emphasis added):
The support ring 14 may be bonded to the
electrode plate 12 by any suitable process which provides
the necessary bonding strength as well as thermal and
electrical characteristics. Typically, bonding will be
performed by either brazing, soldering, or use of
adhesives to form a ductile bonding layer, preferably
having a low vapor pressure. The ductility is desirable so
that any thermal expansion mismatch between the
electrode plate 12 and support ring 14 will not result in
breaking or fracturing of the bond, or the electrode plate
12.
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3. Takao Figure 1 is reproduced below:

Takao’s Figure 1 depicts the upper part of a reaction container
(1) for etching a semiconductor wafer (13) including, inter alia,
an electrode body (4) with its surface anodized with a
conductive material such as aluminum, which is electrically
connected to an upper electrode (7) made of amorphous carbon,
a sealed ring (12) that extends from the bottom of an insulation
ring (11), and a lower electrode (14) (Translation 3).
4. The Examiner’s stated that Takao’s description of the insulating
ring (11) coupled with sealed ring (12) bonds or fastens
electrode (7) to frame (4) describes the limitation of a support
frame “bonded to a back face of the plate” as recited in claim 1,
part (b) because persons skilled in the art would have
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understood the term “bonded” to include physically contacting
by clamping (Ans. 16).
5. Takao teaches that upper electrode (7) has a plurality of holes
(1) to permit the flow of reaction gas from space (8) into
reaction container (1) (Translation 3).
6. Shigeru’s figure 1 is reproduced below:

Shigeru’s figure 1 discloses a device obtained from a
bonding method for a sputtering target in which a
metallic oxide (silicon dioxide) target material (1) is
cleaned with nitric oxide and then the metallic oxide is
bonded to a heat radiant backing plate such as Cu (3), on
which is deposited indium (2), using a thin film layer
such as Au, Ag, or Al (Translation 1-3).
7. Yamada’s figure 3 is reproduced below:

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Yamada’s figure depicts a lower surface of a target 34, which is
attached to a target holding device 32 by soldering a solder
material, such as gallium and indium, to an annular projection
38 of a fixing member 36 (Translation 3).

PRINCIPLES OF LAW
In construing claims, “it would be unreasonable for the PTO to ignore
any interpretive guidance afforded by the applicant’s written description[.]”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). That is, the
interpretation of the claim language must be “reasonable in light of the
totality of the written description[.]” In re Baker Hughes, Inc., 215 F.3d
1297, 1303 (Fed. Cir. 2000).

Anticipation
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
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The use of a known technique for one device in another device may
have been obvious if “a person of ordinary skill in the art would [have]
recognize[d] that [the proposed modification] would improve [the other
device] in the same way,” i.e., the improvement is no “more than the
predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
An obviousness analysis must articulate reasons why “there was an
apparent reason to combine to combine the known elements in the fashion
claimed by the patent at issue.” Id. at 418.

ANALYSIS
Rejections I-III & V
The Examiner’s position is based on the belief that the term “bonded”
(e.g., the recitation “a support frame composed of an electrically and
thermally conductive material bonded to a back face of the [electrode] plate”
in claim 1) reads on the mere contact of electrode body (4) with upper
electrode (7) in Takao by the clamping action of insulation ring (11) and
sealed ring (12) (Ans. 16; FF 3 and 4). We cannot agree.
While it is inappropriate to limit a claim to preferred embodiments
disclosed in the accompanying specification, the claim construction must be
reasonable in light of the totality of the written description. Baker Hughes,
215 F.3d at 1303.
In this case, the ‘456 Patent discusses the term “bonded” only in the
context of its plain meaning (bonding in the engineering or technical sense,
i.e., fusion or integration of two separate materials into a single body) (FF 1
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and 2). Furthermore, the Examiner’s relied upon reasoning does not
sufficiently demonstrate that persons skilled in the art would have used the
term “bonded” in an unconventional manner to include mere physical
contact by action of clamping (FF 4).
Under these circumstances, the Examiner erred in construing the term
“bonded” to read on mere contacting provided by a clamping action, as
disclosed in Takao. Accordingly, we cannot affirm any of the rejections
based on this erroneous claim construction.

Rejection IV
We also cannot agree with the Examiner’s conclusion that a person
having ordinary skill in the art would have been led to combine Takao with
Shigeru to arrive at the subject matter of the rejected claims. Takao
describes an etching apparatus in which electrode body (4) anodized with Al
is electrically connected to an upper electrode (7) made of amorphous
carbon with holes (10) (FF 3 and 5). In stark contrast, Shigeru teaches the
bonding of a target plate made of silicon dioxide (1) to copper (3) on which
is deposited indium (2) using a thin film layer such as gold (FF 6). The
Examiner, however, has not explained how or why a person having ordinary
skill in the art would have had a reasonable expectation that the technique
described for bonding Shigeru’s silicon dioxide sputtering target to
indium/copper would work in Takao’s etching apparatus in which an
amorphous carbon electrode (7) with holes is electrically connected to an
electrode body (4) with anodized aluminum. KSR, 550 U.S. at 417. Hence,
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the Examiner has not articulated an acceptable reason for combining the
references, and, therefore, we cannot affirm. KSR, 550 U.S. at 418.

Rejections VI & VII
We also agree with Appellants that the Examiner’s rejection of the
rejected claims based principally on Takao and Yamada is similarly not well
founded. Like Shigeru, Yamada teaches bonding a sputtering target to an
annular projection of a fixing member using a solder material such as
gallium and indium (FF 7). In stark contrast, Takao describes an etching
apparatus in which electrode body (4) anodized with Al is electrically
connected to an upper electrode (7) made of amorphous carbon with holes
(10) (FF 3 and 5). The Examiner, however, has not explained how or why a
person having ordinary skill in the art would have had a reasonable
expectation that the technique described for bonding Yamada’s target to an
annular projection of a fixing member would work in Takao’s etching
apparatus in which an amorphous carbon electrode (7) with holes is
electrically connected to an electrode body (4) with anodized aluminum.
KSR, 550 U.S. at 417. Hence, the Examiner has not articulated an
acceptable reason for combining the references, and, therefore, we cannot
affirm. KSR, 550 U.S. at 418.

Rejection VIII
With respect to claim 33, the Examiner alleges that the claimed
characteristic (“allowing the bonded assembly to return to room temperature,
whereby the differential contraction [between the support ring and the
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electrode plate] imparts the desired stress”) would be inherent in Shigeru
(Ans. 49). As pointed out by Appellants, however, this finding is based on
speculation, not fact (App. Br. 104). Because Yamada has not been shown
to cure the deficiency in the Examiner’s rejection, we cannot affirm the
Examiner’s rejection based on a combination of Shigeru and Yamada.

CONCLUSION
On this record, Appellants have shown reversible error in:
the Examiner’s conclusion that the term “bonded” as recited in claims
1 and 18 read on mechanical clamping or fastening;
the Examiner’s obviousness conclusion as to claim 7 because the
Examiner did not sufficiently establish that a person having ordinary skill in
the art would have reasonably expected the proposed modification of Takao
in view of Shigeru to result in an operable device;
the Examiner’s obviousness conclusion as to claim 10 because the
Examiner failed to sufficiently establish that a person having ordinary skill
in the art would have had a reasonable expectation of success in modifying
Takao by using Yamada’s bonding layer to affix Takao’s electrode (7) to
body or frame (4); and
the Examiner’s obviousness conclusion as to claim 33 because the
Examiner’s reasoning is based on speculation, not facts.

DECISION
The Examiner’s rejection of:
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I. Claims 1, 3-5, 16-19, 30, and 31 under 35 U.S.C.
§ 102(b) as anticipated by Takao;
II. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Takao and Koch;
III. Claims 6 and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Takao and
Okazaki;
IV. Claim 7, 21, and 32 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Takao and
Shigeru;
V. Claims 8, 9, 22, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Takao;
VI. Claims 10-13 and 24-27 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Takao and
Yamada;
VII. Claims 14, 15, 28, and 29 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Takao,
Yamada, and Shigeru; and
VIII. Claims 33-36 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Shigeru and Yamada
are REVERSED.
Judgment reversing Rejections I-VIII is hereby entered in each of
Reissue Application 10/734,073, Reexamination Control 90/007,027, and
Reexamination Control 90/007,114.
REVERSED
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MAT

For Patent Owner:

Buchanan Ingersoll & Rooney PC
Post Office Box 1404
Alexandria VA 22313-1404

For Third Party Requesters:

Westerman Hattori Daniels & Adrian LLP
1250 Connecticut Avenue NW
Suite 700
Washington DC 20036

John E. Wagner
Law Office of John E. Wagner
3451 Ocean View Blvd
Glendale CA 91208